55 F. 660 -

55 F1d 660

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Case Text

660

.' J'E:QERAL

vol. 55.

Cllurles 13. Collier, ,for complainant. Geo. J. Harding, for defendant. DAI..LAS, Circuit Judge. Prior to the application for the patent in suit, "sealing gaskets" composed of a disk of parchment and a disk of felt, arranged the one upon the other but not secured together, were in use for effecting, and did effect, an air-tight Bealing of jars or other vessels to which, for that purpose, they were applied. There was also in use a patented "packing for packages, cam;!, and vessels of all kinds, in which fluids are to be transported or kept," "composed of a body of tough, flexible material, a sheet of tin or other foil applied thereto, and a flexible waterproof protection or covering;"· and the three layers thus described were "glued, cemented, or pasted together." The patent in suit is to Daniel 'V. Johnson, for "sealing disks for jars," etc., and is J'\ o. 408,177, dated July 80, 1889. 'I'he claims are:
"(1) A sealing gasket for jars or other vess2ls, having a base of waterproof material backpd with and secured to a felted material, substantially as described. (2) A spaling gasket consisting of a body of felted material having watprproof material secured to its opposite faces, substantially as described."

The novelty of the subject-matter of these claims is at least qnestionable; but, assuming it to have been new to "secure" the components of the gaskets previously in use, invention was not involved in pasting together the opposite faces of the old disks, and this is all that was done or proposed by the patentee, or is alleged to be done by the defendant. A decree dismissing the bill, with costs, will be entered.
DE'J'WILER V. BOSLER.1 (Circuit Court, E. D. Pennsylvania. May 9, 1893.)
No. 16.

1.

PATENTS FOR INVENTIONS--fNFHINGEMENT-MrLLS.

Letters patent No. 188,783, granted March 27, 1877, to .John S. Detwiler, for an improvement in grinding mills, claimed "the combination of a pair of stones set to grind coarse, with a second pair of stones, of larger diameter, set to grind tine, and run at a lower speed than the upppr and smaller pair of stones; the partially ground grain falling froll! the upver to the lower stones, and passing from the latter in form of flour." Held, that the claim was infringed by the use of rollers revolving in a vertical plane instead of stones revolving in a horizontal plane, the process and its results being essentially the same in other respects; for such rollers are the well-known equivalents of the stones.

The patentee was not estopped to set up such equivalence to sustain his claim of infringement by reason of the fact that in a communication to the patent office before his patent was granted he claimed that the result obtainable by his invention was distinguishable from that produced crushing rollers; for the failure of an inventor to perceive the adaptability of a known equivalent to the practice' of his invention dOPR not debar his right to protection against its invasion by the use of such equivalent. 3. SAME- V AUDI'l'Y-" GRADUAr, REDUCTION" OF FLOUR. rJ'he device claimed by the patent involves invention, though the "grad· ual reduction" process effected by it was not new.
1

2.

SAME'-EQUIvALENCE-ESTOPPEL.

Rehearin!!l granted.

DETWILER V. BOSLER.

661

4.

SAME-INFRINGE)IENT.

Infringement was not avilWed rollers, of a series of "scalpers" purpose distinct from that of the their operation, or the result they

by the use, in connection with the or sifting machines, whieh served a rollers, and did not vary the mode of accomplished.

In Equity. On final hearing. Suit by John S. Detwiler against Joseph Bosler for the infringement of a patent. Decree for complainant. Charles B. Collier, for complainant. Horace Pettit, for defendant. DALLAS, Circuit Judge. This is a suit in equity for alleged infringement of letters patent No. 188,783, for improven1l'nt in grinding mills, granted to the complainant, and dated March 27, 1877. The cause has been fully heard upon the pleadings and proofs, and is now for decision. The only claim of the patent is:
"The combination of a pair of stones, set to grind coarse, with a second pair of stones, of larger diameter, set tu grind fine, and run at a lower speed than the upper and smaller pair of stones; the partially ground grain falling from the upper to the lower stones, and passing from the latter in the form of flonr, substantially as herein specified."

The defendant's devices and arrangement of parts are not identical with those speeifically designated in this claim. Instead of using "stones," revolving in a horizontal plane, he uses rollers, revolving in a vertical plane; but stones and rollers, with this variance in the nwnner of their revolution, were well-known equivalents in grinding mills, before the application for this pa,tent was made. It has been urged, however, that the complainant is precluded from asserting this equivalence, because, as is alleged, he had, in aid of his application, denied its existence, and had, in effect. disclaimed rollers. This contention is based upon a communication addressed by the plaintiff's solicitor to the commissioner of patents, in which, by way of argument, the result claimed to be attainable by the applicant's invention was distinguished from that produced by crushing rolls. The eontrast whieh was really intended to be made was not between roller'S and stones, but between making flour "praetically direct from wheat," and "the crushing of wheat," which it was admitted had been done by rollers. It seems probable that the applieant did not then perceive that rollers might be substituted for burrstones under his method, but ignorance on the part of an inventol'of the adaptability of a known equivalent to the praetiee of his invention does not bar his right to protection against its invasion by the use of such equivalent; and nothing has been shown which should estop the plaintiff from maintaining that right in this case. The defendant also uses, in connection with his rollers, a series of "scalpers," or sifting machines; but these are additional to the rollers, and have a distinct purpose. Theil' employment does not vary the mode of operation of the rollers, nor the result which

662

FEDERAL REPORTER,

vol. 55.

they accomplish. There are other differences in details between the pl!i.intiff's and the defendant's mechanism, and in its arrangement, but it is not necessary to refer to them. The defendant's expert (Hollingsworth) has testified that, irrespective of scalpers, and assuming that rollers are the equivalents of millstones, the two processes are, in his opinion, exactly the same; and my investigation of the exhibits and of the other evidence satisfies me that this opinion is correct. Hence, as the use of scalpers is immaterial, and as rollers and stones are, in fact, equivalents, it follows that infringement has been shown, and the only remaining question isas to the validity of the patent. To overcome the presumption of its validity, the defendant has adduced some oral testimony, and has also proved several printed publications, as well as a number of patents, both foreign and of the United States, which he claims establish lack both of invention and of novelty. But, upon careful examination of all the evidence, I have reached the conclusion that neither of these defenses is sustained. If, as the defendant has contended, the complainant supposed himself to be the inventor of "gradual reduction," broadly, and by whatever apparatus or method accomplished, I quite agree in thinking that he was mistaken. But his claim alone is to be considered, and that has no such scope. It is for a particular combination process, embodying a described organized mechanism, operating ina designated manner. It is for a combination of two pairs Of stones, (or their equivalents,) the upper pair being of the smaller diameter, and set to grind coarse, and the lower pair being of the larger diameter, and set to grind fine; and so operated that the lower ;pair shall run at a lower speed than the 'upper pair, and that the partially ground grain, falling from the upper to the ·lower, shall pass from the latter in the form of flour. In the defendant's apparatus every element of this claim is present; the same end is achieved by substantially the same means. On the other hand, while it appears that the want which the complainant's invention was intended to supply had been already recognized by those engaged in milling, and that various attempts had been made to meet it, yet the means to that end, which this patentee devised and claimed,had not been previously in use in this country, nor patented or described in any publication either in this or in any foreig-n country. The conception of these means clearly involved invention, and they were both new and usefuL I do not overlook the fact that in some of the uses, publications, and patents set up some one or more of the elements of the plaintiff's invention are present; but in no <me of them-can all of its essential featuresbe found. - It does notllppear from the evidence that any of them "embodied substantially the same organized mechanism, operating snbstantially in the same manner, as that described in the patent claimed to have been anticipated." The plaintiff is entitled to a decree in the usual form, which may be prepared and submitted.

A marine p..1iey on the steamship Samana insured D., for account ot whom it may concern, to be paid, in case of loss, to the steamship company. D. was owner of the entire stock of the company, except a small quantity held by other parties to comply with the incorporation law. 'rhe title to the vessel was in the company, and after issuing the pollcy it sold her to another company, taking a mortgage to D. for a larl;e portion of the prict',. and agreeing to give the purchaser the benefit of the insurance on the Ship, upon paymeht of a proportion of the premium, Wltil other insurance should be effected. The purchaser was to keep the vessel insured to protect the mortgagee, and for his own benefit. Before other insurance was effected tile vessel was lost. Held, that Wlder the provisions that, in case of loss, payment should be made to it, the company could maintain a libel on the pollcy, not only for its own interest, but aJso for the interest of all others having rights under the policy.

S. SAME-CANCEI,LATION-LIAnn,ITY FOR Loss. A vessel covered by a marine policy was sold, and a mortgage taken for the price, the seller agreeing to give the purchaser the benefit of the insurance until other insurance could be effected. On November 22, 1888, she sailed from New York to Aux Cayes, a voyage usually lasting eight days. On November 24th, 25th, and 26th a hurricane of great violence pn'v:liled over her course, and she was never again heard of; but, as there was no telegraphic commWlication with Aux Cayes, her failure to reach that port remained unknown for a long time. On December 3d, before any apprehensions as to her safety had arisen, the purchasers of the vessel effected new insurance, to commence on that day, and a cancellation slip was affixed to the pollcy as follows: "At the request of the assured, this poliey is hereby canceled at and from Dec. 3, '88, at noon, pro rata premium to be paid for 8 months not used." The unused prl'mium was retUrIll'd. Held, that the cancellation was not intended to, and did not, discharge the insurer from liability for loss prior to the date of cancellation, and that the insured was entitled to recover, the returned premium having been paid into court.

8.

SAME-PROOF OF LOSS-WAIVER.

An insurer, by denying liability for loss on the ground that he was re}t'used therefrom by a cancellation of the polley, is estopped to object to the want of preliminary proofs.

In Admiralty. Libel on a policy of insurance by the Steamship Samana Company, Limited, against Albert B. Hall. Decree for libelants. William L. Putnam and D. W. Snow, for libelant. Benjamin Thompson, for respondent. WEBB, District Judge. By their policy No. 1,761, dated Angust 2, 1888, sundry associates of the Portland Marine Underwriters, of whom the defendant was one, insured William B. Duncan, Jr., for account of whom it may' concern, to be paid in case of loss to the libelants, $2,500, from August 3,1888, at noon, to August 3, 1889, at noon, upon the steamer Samana, her body, tackle, apparel, ordnance, munition, artillery, boat, and other furnitnre. The hull, tackle, apparel, and furniture were valued at $25,000; and machinery and boiler, at $20,000. By the terms of the contract, each subscriber assumed liability only in the proportion of one fiftieth part of the loss. The policy contained this provision, viz.: